UK Supreme Court confirms inventors must be human

The Supreme Court has confirmed that an artificial intelligence (AI)-powered machine cannot be an inventor under the Patents Act 1977 and the owner of an AI machine is not entitled to apply for a patent for any technical advances made by the machine if the machine is said to be the inventor.

The much-anticipated judgment has endorsed the majority judgment in the Court of Appeal. The Supreme Court unanimously dismissed an appeal brought by Dr Stephen Thaler, the owner of an AI-powered machine known as DABUS. The leading judgment was given by the experienced patent judge Lord Kitchin.

With the increasing prevalence of AI in our daily lives, the case has garnered much attention – not least because it seemed to raise anthropomorphising questions around whether AI is a "person". However, the judgment was rightly confined to the issues at hand – namely, the proper interpretation of the Patents Act 1977 and the rules that implement it. This led to the unsurprising outcome that an inventor must be a human. Upon enactment of the legislation, Parliament would never have envisaged that the term "inventor" extended to AI-powered machines.

The court acknowledged that the appeal was not concerned with wider policy issues surrounding AI and did not engage with questions concerning whether technical advances generated by machines acting autonomously and powered by AI should be patentable or whether the meaning of the term "inventor" should be broadened to encompass AI-powered machines.

The case was part of a global test-litigation strategy to test the limits of AI inventorship in various jurisdictions. This test-litigation campaign has been largely unsuccessful, with the Supreme Court's decision adding to this lack of success.

The applications

Dr Thaler filed two patent applications at the UK Intellectual Property Office (UKIPO) naming DABUS as the inventor. He was subsequently notified by the UKIPO that he would need to file a statement of inventorship and an indication of the derivation of his right to the grant of the patents in accordance with section 13(2) of the Patents Act and the rules implementing it.

Dr Thaler maintained that DABUS was the inventor and claimed that he was entitled to the grant of the patents by virtue of his ownership of DABUS. The applications were rejected and deemed withdrawn. The UKIPO held that DABUS was not a person and, therefore, it could not be an inventor for the purposes of section 13.

Dr Thaler's appeal against the UKIPO's decision was dismissed in the High Court and the by majority in the Court of Appeal. His appeal in the Supreme Court turned on three main issues, all of which were eventually dismissed.

The meaning of inventor

The first issue related to the meaning of the term "inventor" in the Patents Act and whether this extended to a machine such as DABUS. Although the factual assertion made by Dr Thaler that DABUS did in fact create and generate the "inventions" described in the patent applications was (for the purposes of the application) accepted at face value, the UKIPO did not agree that this qualified DABUS as an inventor under the legislation.

The Supreme Court endorsed the position taken by the UKIPO, the High Court and the Court of Appeal, holding that an inventor within the meaning of the legislation must be a natural person (that is, a human being). The court stated that this conclusion was supported by a previous House of Lords authority and the broader context within the Patents Act. As DABUS is not a person at all, let alone a natural one, it could not devise a relevant invention and, therefore, cannot be an inventor under the Patents Act.

Ownership

The next issue turned on whether, despite there being no identified inventor, Dr Thaler was still entitled to apply for and obtain a patent with respect to any technical advances made by DABUS by virtue of being its owner. Given that the court had already confirmed that DABUS was not an inventor, Dr Thaler failed to meet the requirements set out in section 7 of the Patents Act, which the court emphasised, provides a complete code setting out exhaustively who has the right to apply for a patent.

Further, the court held that section 7 does not confer the right to obtain a patent "for any new product or process created or generated autonomously by a machine, such as DABUS, let alone a person who claims the right purely on the basis of ownership of the machine". It was held to be clear that Parliament did not have this in mind when enacting the legislation. Thus, the legislation cannot be extended to encompass such a situation unless it were to be amended by Parliament in future.

Dr Thaler also tried to rely on the doctrine of accession, claiming that DABUS's "inventions" were the "fruits" of the machine he owns, by analogy with the situation where a person who owns a cow will automatically own a calf produced by the cow. This was dismissed on two counts – firstly, it relied on the incorrect underlying assumption that DABUS met the definition of inventor for the purposes of the Patent Act and, secondly, the doctrine of accession only applies to new tangible property produced by existing tangible property, which was not the case here.

Should the applications have been withdrawn?

Lastly, the court considered whether the UKIPO was entitled to deem the patent applications to be withdrawn for failing to satisfy section 13 of the Patents Act. The court held that it was. Dr Thaler had failed to meet both grounds set out in section 13 – failing to name an inventor and failing to state the derivation of his right to apply for the patent. Dr Thaler's reliance on DABUS as inventor was "flawed and legally impossible".

Osborne Clarke comment

This was an eagerly awaited decision but, ultimately, an unsurprising outcome. The Supreme Court upheld the UKIPO's decision to reject Dr Thaler's patent applications naming DABUS as the inventor. Crucially, inventors can only be natural persons, that is – humans.

The case was specifically framed to form part of Dr Thaler's global test-litigation strategy. Moving forward, it is clear that, in the UK, claiming a machine has autonomously devised a technical advancement and naming the machine as the inventor in a patent application will not be acceptable. However, as the court acknowledged, if DABUS had been framed as a "sophisticated tool" used by Dr Thaler to assist him to create the invention, then the outcome might have been different.

This decision does not impact on the acceptability of patenting AI inventions themselves. The High Court recently found that an AI invention based on an artificial neural network was patentable, which has since prompted the UKIPO to update its patent examination guidance.

Although this case raised a number of broader policy questions about AI, on the facts these issues did not have to be determined by the Supreme Court. The decision turned on straightforward statutory interpretation. If, for policy reasons, a different approach to inventorship is to be taken in the future then this will require intervention from Parliament. What is clear is that AI is going to have a hugely important impact on patent law and intellectual property law more generally. We look forward to future developments.